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Is it a matter of time: does the time stamp for competing filings uploaded on the same day at the TTAB matter?
BlogIP Law Bulletin

Summary: Recently the United States Trademark Trial and Appeal Board (TTAB) considered the implications of competing filings that occurred on the same day. In particular, a trademark applicant filed an express abandonment of its trademark application, and, later that same day, a third party filed an opposition against the trademark application. While the TTAB agreed with the applicant and both dismissed the opposition without prejudice and allowed the application to be abandoned without prejudice, the timing of the filings played no role in reaching this decision. To the contrary, the TTAB stated that it “shall not take cognizance of fractions of a day” and assumed that the parties’ opposition and express abandonment filed on the same day were filed at the same instant. What impact did the decisions being “without prejudice” as opposed to “with prejudice” have on the parties though?

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In 3PMC, LLC v. Stacy Lee Huggins, the TTAB recently ruled on a Fed. R. Civ. P. 60(b) motion for relief from a final judgment filed by a trademark applicant. The applicant filed an express abandonment of the application on the same day that an opposition was filed by a third party. The TTAB’s electronic filing system (known as ESTTA) automatically institutes an opposition upon the filing of an opposition.

The TTAB had entered judgment on a “with prejudice” basis against the applicant for abandoning the application after the commencement of an opposition without the express consent of the opposing party. In its motion, the applicant argued that the request for express abandonment was filed before the opposition and, as a result, the opposition should have been dismissed without prejudice.

In the decision at issue, TTAB sided with the applicant (although not accepting the applicant’s sequence of events) and reversed the judgment. Citing a precedential case, the TTAB stated that it “shall not take cognizance of fractions of a day” and assumed that the parties’ opposition and express abandonment filed on the same day were filed at the same instant. According to the earlier precedential case, the application would not be subject to an opposition when it was abandoned and would be abandoned without prejudice. The TTAB reasoned that while electronic filing systems may permit easier determinations as to the time of filings than filings via U.S. mail, these systems may not be updated continuously and may not reflect documents that have been recently filed and not yet processed.

While the TTAB will credit evidence of the exact hour or minute of filings when the opposing party’s prejudice rises to the level of “manifest injustice,” this threshold was not met in the present instance. The opposer argued that a “without prejudice” disposition means that it would be subject to opposition or a cancellation proceeding down the road and would be unfairly burdened by the need to monitor the activities of the applicant for an unknown amount of time. However, the TTAB disagreed with this argument because the opposer would have the general burden of monitoring third-party filings and policing its mark even if a future application identical to the application at issue here were to be precluded by a “with prejudice” disposition.

It is important to note that express abandonment of the application did not necessarily eliminate the applicant’s rights in the mark. First, the applicant could still have common law rights in the mark. Second, the abandonment without prejudice would allow the applicant to file a trademark application for the mark at a later time. The effect of a “with prejudice” judgment, on the other hand, would have precluded the applicant from registering the same mark in relation to the same goods. The opposer could not have done much to prevent the opposition from being dismissed and, as argued in the case, should continue monitoring whether the applicant has re-filed for the mark and file another opposition as necessary.

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